Geigtech East Bay LLC v. Lutron Electronics Co., Inc.

Background

This written decision rules on the parties’ motions in limine, which are requests to control what evidence or arguments may be presented at trial. The opinion concerns patent infringement, trade dress, unfair competition, validity, copying, damages, and related defenses. The court also addressed evidence involving Patent Trial and Appeal Board proceedings, expert testimony, attorney-client privilege, prior art, and Lutron’s research and development.

Lutron’s Motions

1. Doctrine of equivalents — granted. Lutron sought to exclude evidence or argument that the accused products satisfied patent-claim elements under the doctrine of equivalents. Because GeigTech stated that it did not intend to offer such evidence and the court’s claim construction agreed with GeigTech’s understanding of the disputed terms, the court granted the motion.

2. Patent Trial and Appeal Board decisions — granted in significant part. The court ruled that completed inter partes review and post-grant review proceedings become part of the patent’s prosecution history. The parties’ statements in those proceedings, the fact that the patent was granted, and the results showing that some claims were upheld and others were rejected could be presented. The jury could hear that claims 1–3, 8, and 10–12 remained in the case and could consider the review results as evidence concerning patent validity. The jury could not see the Patent Trial and Appeal Board decision in its entirety, particularly its comment suggesting that Lutron copied GeigTech’s product. The jury would decide copying for itself, and it would be told that the Patent Trial and Appeal Board did not decide infringement.

3. Prior rulings about experts — granted to a stated extent. The court barred GeigTech from introducing prior judicial findings as affirmative evidence because they were hearsay. Whether GeigTech could cross-examine Lutron’s expert, Joel Delman, about a prior case would depend on why his testimony was not accepted there. The court also described circumstances in which that questioning could be allowed and followed by rehabilitation on redirect.

4. Evidence of actual confusion — no ruling on GeigTech’s additional use at this time. GeigTech said it did not intend to use nine emails, Reddit threads, or other internet communications to prove actual consumer confusion, which addressed the motion as framed. GeigTech separately sought to use some or all of those communications for other trade dress purposes, including substantial similarity, and sought a ruling about the difficulty of proving actual confusion in the high-end motorized shade market. The court did not rule on that additional request because Lutron had not yet had an opportunity to respond. Lutron was given five business days to identify any evidentiary objections, including hearsay objections.

5. Lutron’s overall revenues and relative size — granted in part and denied in part. Because GeigTech could not introduce information it did not possess, the motion was granted to that extent. The motion was denied to the extent it sought to bar evidence about the companies’ relative size, which the court concluded could be relevant to bargaining power in calculating a reasonable royalty.

6. Foreign sales and profits — denied without prejudice as premature. The court treated this request as primarily seeking a limiting jury instruction about how the jury could use evidence of Lutron’s foreign sales when deciding trade dress and unfair competition damages. Because the evidence would also be presented in connection with patent damages, the court denied the motion without prejudice as premature. The court ruled that sales in Puerto Rico and any United States territory qualify as United States sales for all purposes.

7. Pre-Markman claim-construction positions — trial rule stated. The court stated that the jury would receive the court’s claim constructions and that the parties would not be permitted to introduce evidence, testimony, or argument about claim-construction positions the court had rejected.

GeigTech’s Motions

1. Comparisons involving GeigTech’s product — denied. GeigTech sought to prevent Lutron from comparing the accused devices with preferred embodiments, the patent specification, or non-accused products or methods when making non-infringement arguments. The court allowed Lutron to show GeigTech’s product because comparing the two products was relevant to the trade dress claim and because Lutron could use the product in the manner described in the court’s instructions.

2. Attorney consultations and the ‘821 patent — granted, subject to an exception. Lutron said it would not assert an advice-of-counsel defense or waive attorney-client privilege, and the court ruled that Lutron could not affirmatively elicit that its engineers consulted attorneys when designing the accused product. If GeigTech opened the subject by asking questions that required a witness to reveal attorney involvement in giving a truthful and complete answer, the witness would not be prevented from providing that answer. The court therefore granted GeigTech’s motion subject to that exception.

3. Equitable defenses — denied. GeigTech sought to keep evidence about equitable defenses, including inequitable conduct, from the jury and to separate the jury’s trial from the court’s consideration of those defenses. The court denied the motion. It directed the parties to identify issues and evidence that overlap between matters for the jury and matters for the court, with jury findings used in an advisory capacity on issues reserved for the court. The court also described procedures for evidence relevant only to equitable defenses that would be heard while the jury deliberated.

4. Prior art and infringement theories — denied. The court denied GeigTech’s request to bar Lutron from using prior art to argue that the patent was invalid. Lutron could argue that the ‘717 patent was anticipated by prior art, including prior art concerning concealed wiring. Lutron could not argue that the accused product avoided literal infringement merely because it practiced the prior art.

5. Lutron’s patents concerning the Palladiom shade — denied. Lutron could present evidence of its own research and development, including patent applications, for any relevant purpose. The court noted that GeigTech could propose a limiting instruction if one became necessary.

Disposition

The court directed the clerk to remove Docket Nos. 310, 311, 313, 314, 316, 317, 319, 320, 323, 326, 328, and 330 from the list of open motions. Judge Colleen McMahon signed the decision and order dated January 5, 2024.